Ex Parte Ebersberger et alDownload PDFPatent Trial and Appeal BoardDec 19, 201612306783 (P.T.A.B. Dec. 19, 2016) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/306,783 12/29/2008 Georg Ebersberger 810723 6908 95683 7590 12/21/2016 Leydig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 EXAMINER ERB, NATHAN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 12/21/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): chgpatent @ ley dig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORG EBERSBERGER, and BERND GUENTHER Appeal 2014-006796 Application 12/306,783 Technology Center 3600 Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and KENNETH G. SCHOPFER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 16-20 and 22-29 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. Appeal 2014-006796 Application 12/306,783 THE INVENTION The Appellants’ claimed invention is directed to ensuring data privacy in determining toll routes (Spec. 1, lines 9-12). Claim 16, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 16. A method for determining toll routes, using a filter unit and a vehicle onboard unit of a vehicle in communication with one another, the filter unit having map material so that toll routes are determinable on the basis of a position data, the method comprising the following steps: [1] transmitting, by the onboard unit, the position data to the filter unit without revealing an identity of the on board unit; [2] checking, by the filter unit, the transmitted position data for toll relevance; [3] transmitting, by the filter unit, toll collection data including at least one of road segment IDs, road class categories inducting distance, and evaluated tariff data records to the onboard unit for charge calculation and billing; [4] storing the toll routes by the onboard unit; and transmitting the toll routes to a toll collection point for the charge calculation; [5] wherein the filter unit is a central filter unit located away from the vehicle. The Examiner relies upon the following as evidence in support of the THE REJECTIONS rejections: Nakashima et al., Cedervall et al., US 2003/0033083 Al Feb. 13, 2003 US 2004/0203900 Al Oct. 14, 2004 US 6,171,112 B1 Jan. 9,2001 US 2004/0212518 Al Oct. 28, 2004 US 2003/0088767 Al May 8, 2003 Clark et al., Tajima et al., Emerson III 2 Appeal 2014-006796 Application 12/306,783 The following rejections are before us for review: 1. Claims 16, 17, 22, and 24 are rejected under 35 U.S.C. § 103(a) under Hayashi, Nakashima, and Cedervall. 2. Claims 18 and 23 are rejected under 35 U.S.C. § 103(a) under Hayashi, Nakashima, Cedervall, and Clark. 3. Claims 19 and25-28 are rejected under 35 U.S.C. § 103(a) under Hayashi, Nakashima, Cedervall, and Tajima. 4. Claim 20 is rejected under 35 U.S.C. § 103(a) under Hayashi, Nakashima, Cedervall, and Emerson. 5. Claim 29 is rejected under 35 U.S.C. § 103(a) under Hayashi, Nakashima, Cedervall, Tajima, and Emerson FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANAFYSIS The Appellants argue that the rejection of claim 16 is improper because the prior art fails to disclose limitations [1] and [2] identified in the claim above and further that the combination would not have been obvious (App. Br. 5-7, Reply Br. 2-4). In contrast, the Examiner has determined that the cited claim limitations are found in Nakashima at paras. 81-84 and Cedervall at 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2014-006796 Application 12/306,783 paragraph 19 and that the cited combination would have been obvious (Ans. 4-8). We agree with the Examiner. The argued claim limitations [1] and [2] require: [1] transmitting, by the onboard unit, the position data to the filter unit without revealing an identity of the on board unit; [and] [2] checking, by the filter unit, the transmitted position data for toll relevance. (Claim 16). Here, the above argued claim limitations are shown by the prior art. Here, Nakashima is directed to a road guidance system and at paras. 81- 82 discloses a position determination section and transmitting a vehicles present position. Nakashima at paras. 83 and 84 discloses including guide point information including toll roads which would be “toll relevance.” Cedervall at para. 19 discloses “protecting the privacy of a user of the wireless unit” which serve to “not reveal the identity” the user. Hayashi at col. 19:35-65 discloses updating balance information based on tolls. Here, the argued cited claim limitations [1] and [2] have been shown in the cited prior art. We agree with the Examiner’s determination that the cited combination of references would have been obvious to meet the requirements of claim 16. Nakashima is directed to vehicle guidance systems including providing toll road information, and Hayashi is directed to updating toll balances for a vehicle. Cedervall discloses keeping location based services private, which could be used in the location based combination of record in the rejection. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific 4 Appeal 2014-006796 Application 12/306,783 subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 418. Appellants’ arguments attack references individually, while the rejections at issue are over a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”). Here, the modification of Nakashima’s road position guidance system with toll data to include updated toll balance information as taught by Hayashi, and to keep transactions anonymous as taught by Cedervall in a location based service would have been an obvious, predictable combination of familiar elements for their known functions. For these reasons the rejection of claim 16 is sustained. The Appellants have provided essentially the same arguments for the remaining claims and the rejection of these claims is sustained as well. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting the claims as listed in the Rejections above. DECISION The Examiner’s rejection of claims 16-20 and 22-29 is sustained. AFFIRMED 5 Copy with citationCopy as parenthetical citation